Finkl & Sons Co. v. James Finkl
Claim Number: FA1506001623405
Complainant is Finkl & Sons Co. (“Complainant”), represented by Ulrika E. Mattsson of McDermott Will & Emery LLP, Illinois, USA. Respondent is James Finkl (“Respondent”), represented by Jerome Weitzel of Kozacky Weitzel McGrath P.C., Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <finklsteel.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hugues G. Richard as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 8, 2015; the Forum received payment on June 8, 2015.
On June 9, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <finklsteel.com> domain name (the “Disputed domain name”) is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 30, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@finklsteel.com. Also on June 10, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on June 30, 2015.
A timely Additional Submission was received from Complainant and determined to be complete on July 6, 2015.
A timely Additional Response to Additional Submission was received from Respondent and determined to be complete on July 14, 2015.
On July 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hugues G. Richard as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends the following:
Complainant is a steel forgings supplier company and uses the FINKL and FINKL STEEL marks around the world in connection with its business activities.
Complainant owns five trademark registrations with USPTO: two for the FINKL mark (Reg. No. 4,169,556 registered on July 10, 2012 and Reg. No. 919,249 registered on August 31, 1971), two for the FINKL STEEL mark (Reg. No. 3,793,396 registered on May 25, 2010 and Reg. No. 3,778,379 registered on April 20, 2010) and one for the FINKL FORGING FORUM mark (Reg. No. 1,651,754 registered on July 23, 1991).
Having received extensive coverage in media as to its high quality products, Complainant’s marks are well-known and/or famous under U.S. trademark law.
Some of Complainant’s registered marks are incontestable under section 1065 of the U.S. Code.
Complainant owns a domain name registration for <finkl.com>.
Complainant had rights in the FINKL marks and FINKL STEEL marks through long continuous use and federal registrations prior to the registration of the Disputed domain name <finklsteel.com>, which was registered on July 8, 2014 by the Respondent.
The Disputed domain name <finklsteel.com> is confusingly similar with Complainant’s FINKL mark and identical to Complainant’s FINKL STEEL mark as it incorporates it entirely.
Respondent does not have any rights or legitimate interest in respect of the Disputed domain name. Respondent is not commonly known by the association of the words “Finkl” and “Steel”. Respondent has no rights to use Complainant’s FINKL STEEL mark nor has he been authorized by Complainant to do so.
Respondent uses the Disputed domain name, which is confusingly similar with Complainant’s mark to redirect Internet user to a website dedicated to Respondent’s family. Respondent’s website use is not connected to a bona fide offering of goods or services nor a legitimate noncommercial or fair use as set forward respectively by paragraphs 4(c)(i) and 4(c)(iii) of the Policy.
Respondent has registered and is using the Disputed domain name in bad faith. Respondent’s conduct constitutes trademark infringement and cybersquatting. Respondent uses the Disputed domain name primarily for the purpose of deceiving consumers and disrupting Complainant’s business, which constitutes bad faith under paragraph 4(b)(iii) of the Policy.
Respondent, who has once been employed by Complainant but is not anymore, intends to attract Internet users on his website profiting from the confusion created by the similarity of the Disputed domain name and Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the website, conduct which constitutes bad faith under paragraph 4(b)(iv) of the Policy.
At the time of the registration of the Disputed domain name, Respondent had knowledge of the existence of Complainant’s famous marks. This constitutes evidence of bad faith.
B. Respondent
Respondent contends the following:
Complainant’s FINKL STEEL mark incontestability under American trademark law has not been proven by Complainant; Respondent disputes Complainant has met the requisite continuous commercial use requirement.
Complainant’s FINKL STEEL mark is not identical to the Disputed domain name <finklsteel.com> because there lacks a space between the words “Finkl” and “Steel” in the domain name and there is also the addition of “.com”, which is not present in the mark.
Respondent recognizes that the Disputed domain name is similar to Complainant’s FINKL STEEL and FINKL marks, but not confusing, because Internet users who visit Respondent’s website understand by its content that it is about the Finkl family legacy and not about Complainant’s business activities.
Complainant failed to meet its initial burden to prove Respondent does not have any rights or legitimate interest in the domain name.
Respondent possesses rights or legitimate interest in the Disputed domain name because Respondent is using it for a legitimate noncommercial purpose or fair use, as provided by paragraph 4(c) of the Policy.
Respondent’s use of the Disputed domain name is noncommercial and informative as the website only honors the Finkl biological family legacy, which is to say Respondent’s family. It presents no possibility of any sorts of transaction nor any links to competitors, it does not attempt to sell any products and finally it does not attempt to tarnish any of Complainant’s marks. The only references made to Complainant are factual positive information, necessary to the website’s mission, as Complainant’s company has been started by the Finkl family.
Complainant’s assertion that Respondent has no rights in the Disputed domain name because Respondent is not commonly known by that name is wrong and unsupported.
Respondent recognizes he has not been authorized to use Complainant’s FINKL STEEL mark in any domain name but disputes he has used the mark.
Respondent admits he is not employed nor has any involvement in Complainant’s business anymore since he has quit employment and sold his substantial interest in it several years ago. However, because he has been involved in Complainant’s company for decades and since Complainant’s name includes his own personal surname, Respondent necessarily shares a connection with Complainant.
Respondent has not registered nor is using the Disputed domain name in bad faith.
Respondent’s use of the Disputed domain name does not even remotely falls within any of the circumstances listed at paragraph 4(b) of the Policy.
Moreover, the mere fact that Respondent had knowledge of Complainant’s marks when he registered the Disputed domain name does not constitute bad faith. Respondent’s legitimate noncommercial and fair use of the Disputed domain name shall also preclude allegations of bad faith.
C. Additional Submissions
Additionally, Complainant contends the following:
Complainant has been using its FINKL STEEL mark since at least 1945, having submitted as evidence articles which mentioned the usage of the mark.
The addition of the word “Steel” to the surname “Finkl” by Respondent in the Disputed domain name is an obvious allusion to Complainant’s business intended to confuse and divert Complainant’s consumers. Respondent has no rights or legitimate interest in this association of words. To honor his family heritage, Respondent could have used the word “Family” instead of “Steel”, for example.
The list of circumstances proving bad faith provided in the Policy is illustrative and not exhaustive. For instance, bad faith on the part of Respondent is to be found from the fact that Respondent had knowledge of Complainant’s rights in the marks because Respondent was very familiar with Complainant’s business and famous marks. The obvious allusion to Complainant’s marks constitutes opportunistic bad faith.
Additionally, Respondent contends the following:
Complainant has failed to prove FINKL STEEL mark is incontestable because the articles Complainant submitted were never written by Complainant, thus not demonstrating Complainant’s own use of the mark.
Respondent is making a legitimate noncommercial or fair use of the Disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s marks even if Respondent mentions Complainant on his website.
The mere fact that the registration of the Disputed domain name by Respondent included Complainant’s mark without more does not constitute bad faith.
Complainant is a steel forgings supplier company. Complainant has rights in the FINKL STEEL mark, as it has registered two trademarks of the sort with USPTO (Reg. No. 3,793,396 and Reg. No. 3,778,379), the latest having been registered on May 25, 2010.
Respondent is an ex-employee of Complainant’s business. Respondent also had substantial interest in Complainant’s business but decided to sell it and quit the company years ago. Respondent has registered the Disputed domain name <finklsteel.com> on July 8, 2014. Respondent is running, under the Disputed domain name, a website that has for mission to honor the legacy of his family (the Finkl family). As the Finkl family founded Complainant’s company over a hundred years ago, the website mentions some historical facts about Complainant’s company.
Respondent is not authorized by Complainant to use any of Complainant’s marks.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Disputed domain name <finklsteel.com> is identical to the FINKL STEEL mark in which Complainant has rights.
Complainant has rights in the FINKL STEEL mark as it is registered with USPTO under Reg. No. 3,793,396 and Reg. No. 3,778,379. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum April 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). As for the current use of the mark, the Panel is actually satisfied by Exhibit A submitted by Respondent (declaration of fusion between Complainant’s company and other steel forgings producers under the banner of FINKL STEEL) that Complainant currently uses its FINKL STEEL mark.
Because it is registered with USPTO, the Panel finds it is unnecessary to settle the issue of the incontestability and famous character of Complainant’s mark for the purpose of determining if Complainant has rights in the FINKL STEEL mark.
The Disputed domain name is identical to Complainant’s FINKL STEEL mark as it entirely incorporates it. Respondent argument concerning the absence of a space between the words “Finkl” and “Steel” is invalid because it is impossible to register a space in a domain name. It is also obvious that the suffix “.com” shall not be included for the purpose of a paragraph 4(a)(i) of the Policy analysis; suffix is an essential utilitarian element of a domain name and should therefore not be taken in consideration. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum January 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
Hence, Complainant has proved the Disputed domain name <finklsteel.com> is identical to the FINKL STEEL mark in which Complainant has rights.
Rights or Legitimate Interests
Respondent does not have any rights or legitimate interest in respect of the Disputed domain name <finklsteel.com>.
It is first important to notice that Respondent was never authorized by Complainant to use its FINKL STEEL mark, in which Complainant had rights more than four years prior to the registration of the identical Disputed domain by Respondent. Hence, even though Respondent has no rights in the FINKL STEEL mark, he strictly incorporated it (without any nuance or modification) in the Disputed domain name, over which Complainant has no control. No control over any website associated with the Disputed domain name.
The Panel is satisfied there is no evidence supporting that Respondent is commonly known under the association of the words “Finkl” and “Steel.” In fact, it is precisely the association of Respondent’s surname “Finkl” with the word “Steel” that is problematic because it unequivocally makes reference to Complainant’s mark FINKL STEEL.
For his defense, Respondent claims he is doing a noncommercial or fair use of the Disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark of Complainant. As provided by paragraph 4(c)(iii) of the Policy, if Respondent succeeds in proving his use of the Disputed domain name corresponds the above described circumstance, Respondent’s rights or legitimate interest will be demonstrated.
In the light of the Respondent’s website content, it is true the Respondent’s usage of the Disputed domain name has no commercial gain intention nor does it attempt to tarnish Complainant’s mark. Though, these exclusions do not automatically render the use of the Disputed domain name “legitimate” as per paragraph 4(c)(iii) of the Policy.
The question at issue is not whether the content of the website itself is legitimate; rather, under paragraph 4(a)(iii) of the Policy, the Panel has to determine if the use of the Disputed domain name related to the website is justified by a right or a legitimate interest on the part of Respondent. In the present case, the mission of Respondent’s website seems perfectly reasonable: there is no problem in honoring the Finkl family legacy. However, as discussed, Respondent’s choice to use the exact FINKL STEEL mark without Complainant’s authorization is problematic. The fact itself that Complainant objects the use of its mark in the Disputed domain name by Respondent shall lean against the recognition of a legitimate interest in it. See Marty Stuart. v. Marty Stuart Fan Page C/O Sherry Mattioli, FA FA0309000192600 (Nat. Arb. Forum October 22, 2003) (Recognizing the absence of rights or legitimate interest because “The Complainant’s objection to the subject domain name deprives the Respondent of a legitimate interest in it.”)
As Complainant suggests in its Additional Submission at paragraph 7, the use of the word “Family” (or we can think of many alternatives such as “Heritage”, “Legacy” etc.) instead of “Steel” in the Disputed domain name would have perfectly served Respondent’s legitimate interest in running his website.
Moreover, the Panel finds that the inclusion of the words “Steel” after the Respondent’s surname “Finkl” in the Disputed domain name cannot be only incidental or accidental, but rather indicates a general intent to profit from the goodwill and the confusion created by the identical nature of the Disputed domain with Complainant’s mark such conduct clearly does not encourage the recognition of a legitimate interest. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum September 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy paragraph 4(c)(i) of the Policy and it is not a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy.”). Also, if the references made to Complainant’s company on Respondent’s website are not problematic per se, the use of a domain name identical to Complainant’s trademark constitutes an obvious intent to create an initial confusion.
Hence, Complainant has proved Respondent does not have any rights or legitimate interest in respect of the Disputed domain name <finklsteel.com>.
Respondent has registered and uses the Disputed domain name <finklsteel.com> in bad faith.
It is true that Respondent’s conduct does not fit in any of the circumstances listed at paragraph 4(b) of the Policy. In particular, Respondent never seemed to have the intention to make any sort of commercial gain or profit by using the Disputed domain name, nor did he positively attempted to disrupt or harm Complainant’s business. However, as stated by Complainant, the circumstances listed at paragraph 4(b) of the Policy are rather illustrative than exhaustive and the Panel judges a more personalized analysis is needed in the present case.
As discussed above, the association of the word “Finkl” (which independent use is not problematic as it is Respondent’s surname) with the word “Steel” in the Disputed domain name undeniably refers to Complainant’s mark and company. As Respondent himself claims it, because of the special connection Respondent has with Complainant’s company as an ex-employee, former substantial interest holder and direct descendant of its founders, it is clear that Respondent was aware of the inherent reference to Complainant’s FINKL STEEL mark which the Disputed domain name bears.
Thus, at the time of the registration and ever since, Respondent had actual knowledge not only of Complainant’s mark, but also of the risks of confusion associated with its inclusion in the Disputed domain name. Actually, if it is not to benefit from the goodwill associated to Complainant’s FINKL STEEL mark, the Panel finds it difficult to explain why Respondent insists on using the Disputed domain name against Complainant’s will. Respondent decided to quit Complainant’s company years ago but seemingly tries to continue to profit from its reputation without Complainant’s authorization.
Finally, even though he could have used many other reasonable alternatives that would have efficiently depicted the nature of his website without creating any confusion with Complainant’s mark and business, Respondent knowingly chose to use the exact and limited FINKL STEEL mark in the Disputed domain name. This conduct without a doubt helps the Panel to recognize bad faith on the part of Respondent. See Compagnie de Saint Gobain v. Com-Union Corp, D2000-0020 (WIPO March 14, 2000) (Recognizing bad faith where “Respondent could have chosen a domain name adequately reflecting both the object and independent nature of its site, as evidenced today in thousands of domain names. By failing to do so, and by knowingly choosing a domain name which solely consists of Complainant’s trademark, Respondent has intentionally created a situation which is at odds with the legal rights and obligations of the parties.”)
In his response (paragraph a (iii)), Respondent admits that <finklsteel.com> has nothing to do with steel production or sales and actually offers no goods or services of any kind for sale. Why then register and use a domain name identical to Complainant’s mark, if not to profit from its reputation and goodwill? The Panel finds it difficult to accept the fact that the unauthorised use by an individual of a third party’s trademark with the intent to attract persons to visit his website can be use in good faith of a domain name.
Hence, Complainant succeeded in proving the Disputed domain name was registered and used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <finklsteel.com> domain name be TRANSFERRED from Respondent to Complainant.
Hugues G. Richard, Panelist
Dated: July 22, 2015
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